Odd Sox LLC

Trademark Trial and Appeal Board

Sep 30, 2019

86297488 (T.T.A.B. Sep. 30, 2019)

This Opinion is a
Precedent of the TTAB

Mailed: September 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Odd Sox LLC
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Serial No. 86297488
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Brittany J. Maxey of Maxey Law Offices PLLC for Odd Sox LLC.

Tara L. Bhupathi, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Kuhlke, Ritchie and Larkin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Odd Sox LLC (“Applicant”) seeks registration on the Principal Register of the
mark shown below for “socks,” in International Class 25.1

1 Application Serial No. 86297488 was filed on June 2, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of use and first use in
commerce at least as early as December 31, 2013.

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The application includes the following description of the mark:
The mark consists of a three-dimensional configuration of
product packaging for displaying a single pair of socks
hanging side by side. The socks are displayed in a manner
in which the toe of the sock is flattened and faces forward
from an elongated rectangular packaging design. The
broken lines depicting two socks hanging side by side
shows the placement of the Mark. The hook element, the
two fasteners and the vertical lines representing ribbing on
the socks are not part of the mark.
The Trademark Examining Attorney issued a final refusal of registration of
Applicant’s packaging trade dress under Sections 1, 2 and 45 of the Trademark Act,
15 U.S.C. §§ 1051, 1052 and 1127, on the grounds that Applicant’s trade dress
“consists of a generic configuration of packaging, or, in the alternative, consists of a
non-inherently distinctive configuration of packaging.” 16 TTABVUE 2.2
The case is fully briefed. We affirm both refusals to register.

2 When the refusal was originally made final, Applicant appealed and filed a brief. Thereafter,
upon the Examining Attorney’s request, the Board remanded the application, which resulted
in the refusal based on incapability as generic trade dress and further amendments to the
description of the applied-for trade dress. After the application was returned to the Board,
upon Applicant’s request, the Board remanded the application to the Examining Attorney
once again, this time for reconsideration of her final refusal. After the Examining Attorney
denied the request for reconsideration, the Board resumed proceedings and allowed
Applicant time to file a supplemental brief, which it filed.
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Basis of Refusals
The statutory basis for the refusals to register falls under Trademark Act Sections
1, 2 and 45. Sections 1 and 2 of the Trademark Act require that the subject matter
presented for registration be a “trademark” as defined by Section 45 of the Act.3 As
noted above, the Examining Attorney asserts two grounds for refusing registration.
The first is that the trade dress is incapable of functioning as an indicator of source
because it is generic. See Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 50
USPQ2d 1532, 1535 (Fed. Cir. 1999); see also Stuart Spector Designs, Ltd. v. Fender
Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009); TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1202(b)(ii) (Oct. 2018). The second is, in the
alternative, that the trade dress is sufficiently common that it is not inherently
distinctive and not registrable on the Principal Register without sufficient proof of
acquired distinctiveness. See In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1631
(Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342,
196 USPQ 289, 291 (CCPA 1977)); In re Procter & Gamble Co., 105 USPQ2d 1119,
1121-22 (TTAB 2012). Regarding the second refusal, Applicant contends that its
applied-for trade dress is inherently distinctive and does not claim, in the alternative,
that its trade dress has acquired distinctiveness under Trademark Act Section 2(f),
15 U.S.C. § 1052(f).

3 “[A]ny word, name, symbol, or device, or any combination thereof (1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the
principal register established by this chapter, to identify and distinguish his or her goods …
from those manufactured or sold by others and to indicate the source of the goods.”
Serial No. 86297488
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The Applied-for Trade Dress and Evidence of Third-Party Use
Because the evidence in support of both grounds for refusal is the same, we begin
with a review of the record, including evidentiary objections raised and discussed by
Applicant and the Examining Attorney. Applicant’s applied-for packaging trade dress
consists of an elongated rectangle from which hangs a single pair of socks with the
toes flattened facing forward hanging side-by-side. We further observe that the
packaging may serve the practical purpose of displaying a feature of the product as
illustrated by Applicant’s use shown below, where the side-by-side orientation reveals
that when put together the socks complete a single image; although this aspect of the
packaging design is not part of the drawing or mark description, it is relevant to the
analysis of limited possibilities for competitors discussed below:4

4 Applicant’s specimen of use submitted with its June 2, 2014 Application; October 27, 2015
Response at 4. Page references to the application record refer to the USPTO’s Trademark
Status & Document Retrieval (TSDR) system.
Serial No. 86297488
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In support of the refusal, the Examining Attorney submitted evidence in the form
of screen prints from third-party websites offering and displaying socks for sale or
providing information for retailers on how to display socks, all showing socks hanging
from various rectangular holders, many in the side-by-side orientation. A few
examples are reproduced below:

October 17, 2016 Office Action at 6 (https://www.thehunt.com)
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March 23, 2015 Office Action at 34 (http://www.eroswholesale.com)

October 17, 2016 Office Action at 2 (geb.ebay.in)
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October 17, 2016 Office Action at 3 (www.google.com/…www.ebay.it)

October 17, 2016 Office Action at 4 (www.google.com…www.ebay.com)

October 17, 2016 Office Action at 5 (www.ebay.tv)

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October 17, 2016 Office Action at 7 (geb.ebay.in)

October 17, 2016 Office Action at 8 (https://guide.alibaba.com)
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October 17, 2016 Office Action at 11 (https://guide.alibaba.com)

May 11, 2017 Office Action at 2 (www.alibaba.com)
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May 11, 2017 Office Action at 4 (www.shoparthurgeorge.com)

March 23, 2015 Office Action at 33 (http://www.horror-hall.com)

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November 25, 2014 Office Action at 2 (http://www.nonslipgripsocks.com)5
Applicant discounts this evidence, arguing that “[a]ll but two (2) of the twenty-
nine (29) examples included within the chart fail to show both an elongated
rectangular packaging and a single pair of socks hanging side by side.” App. Supp.
Br. 14 TTABVUE 10 (emphasis added). Of the two remaining examples, Applicant
asserts that one is a counterfeit item which serves to support the uniqueness of
Applicant’s mark and the other is from eBay India, a foreign website, which is not
probative of U.S. consumer perception. Id. at 15-18.
The example submitted by the Examining Attorney that Applicant characterizes
as a “knock-off [of] Applicant’s goods,” 14 TTABVUE 15, is shown below:6

5 While this example does not show front-facing pairs of socks it does add to the examples of
socks hanging from a rectangular piece.
6 March 23, 2015 Office Action at 32 (http://www.aliexpress.com).

Serial No. 86297488
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Applicant points to the bottom of the page on this excerpt that references the style
of these socks as “ODD SOX.”7

7 Id.
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In addition, as shown below8 Applicant submitted other excerpts from this website
showing the same manufacturer offering “a whole category of goods where the
counterfeit socks are sold as ‘ODD Style Socks.’” 14 TTABVUE 16.

8 June 3, 2015 Response at 10-11, 22 (www.aliexpress.com).
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Applicant explains that “[t]he AliExpress seller for this piece of evidence is
Nanchang Fashion-Tee T-shirt Factory Store (hereinafter ‘Nanchang’) from China.
The piece of evidence from page 38 of the March 2015 Office Action … references the
style of the socks as ‘ODD SOX,’ referencing Applicant Odd Sox LLC …. A review of
Nanchang’s on-line store shows a whole category of goods where the counterfeit socks
are sold as ‘ODD Style Socks. … [T]he counterfeit product has copied the entire look
and feel of Applicant’s product packaging, as well as copies of Applicant’s photographs
of its own Goods. Under the ‘Item specifics’, the style of the single pair of socks is
listed as ‘ODD SOX’.” 14 TTABVUE 15-16. Applicant argues that the existence of
these “counterfeit goods under the style of ‘Odd Sox’ supports Applicant’s position
that Applicant’s Mark ‘is so unique, unusual or unexpected in this market that one
can assume without proof that it will automatically be perceived by customers as an
indicia of origin – a trademark.’” 14 TTABVUE 17-18 (quoting Procter & Gamble Co.,
105 USPQ2d at 1122).
The Examining Attorney argues that:
[T]here is no evidence of cease and desist letters or actions
against the alleged infringing user. A finding that the use
is infringing or counterfeit is a conclusion of law, not a
statement of fact that can be relied upon solely based on
the verification of applicant’s attorney, as argued by
applicant. … Second, applicant argues that the infringing
use supports a finding that the mark is unique because the
AliExpress evidence lists ODD SOX as the style of the
socks. … However, it is plausible that “style” refers to the
brand of the socks and the website is re-selling applicant’s
goods or that “style” refers to the style of the socks
themselves. … [E]ven if the evidence does show use of the
same product packaging and is attributed to applicant,
such evidence does not prove that the packaging is unique.
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Mere evidence of copying does not prove distinctiveness. …
Here, applicant attempts to use the AliExpress evidence to
show the mark is unique and the examining attorney
disagrees as applicant does not point to any precedent
showing that evidence of copying is probative on the issue
of distinctiveness. Even if copying is probative, one
example is insufficient to establish inherent
distinctiveness.
16 TTABVUE 15-17.
Applicant first responds that its counsel “on behalf of Applicant and as Applicant’s
signatory, attested to the truth and accuracy of the statements in said Response” and
this is sufficient to prove that the evidence “displays a counterfeit of Applicant’s Mark
and Applicant’s goods.” 14 TTABVUE 17. Second, Applicant responds that it has not
argued that this evidence of copying proves distinctiveness but simply that it “further
exemplifies that Applicant’s Mark is so unique and unusual in Applicant’s industry
that the Mark is inherently distinctive … that Applicant’s Mark is so unique, unusual
or unexpected in this market that one can assume without proof that it will
automatically be perceived by customers as an indicia of origin – a trademark.” Id. at
16-17.
As to Applicant’s first contention, the Response includes a declaration under
Trademark Rule § 2.20, 37 C.F.R. § 2.20, and is, therefore, acceptable as a sworn
statement. We accept this statement as Applicant’s view, rather than a legal
conclusion, but not as established fact. As to Applicant’s second contention that “the
counterfeit goods under the style of ‘Odd Sox’ further exemplifies that Applicant’s
mark is so unique and unusual in Applicant’s industry that the Mark is inherently
distinctive” (14 TTABVUE 17), this is not the case.
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What appears on the AliExpress site includes arguably source-identifying
wording, ODD SOX, along with the depiction of the goods and trade dress packaging.
Because the copying in these instances is not limited to the applied-for trade dress
alone, it does not show that the copier perceived the trade dress by itself as a source
indicator or believed that consumers would rely on the trade dress alone as an
indicator of the source of the goods. In re Fantasia Distrib., Inc., 120 USPQ2d 1137,
1145-46 (TTAB 2016); see also Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d
1468, 1518 (TTAB 2017) (copying of trade dress may not be probative of anything
where it is not clear what features were copied). As explained in In re Ennco Display
Sys., Inc., 56 USPQ2d 1279, 1286 (TTAB 2000):
In regard to other evidence of acquired distinctiveness, we
are not convinced that competitors intentionally copied the
subject configurations to trade on applicant’s asserted
distinctiveness as the source of the products. Applicant has
not presented any concrete evidence of intentional copying.
In any event, it is more common that competitors copy
product designs for desirable qualities or features. Thomas
& Betts Corp. v. Panduit Corp., 65 F.3d 654, 36 USPQ2d
1065 (7th Cir. 1995) (copying product shape for useful
features not evidence of acquired distinctiveness[)]; Cicena,
Ltd. v. Columbia Telecomm. Grp., 900 F.2d 1546, 1551-52,
14 USPQ2d 1401, [1407] (Fed. Cir. 1990) (product copying
based on desire to capitalize on the “intrinsic consumer-
desirability” of the product not evidence of acquired
distinctiveness).
In the context of this ex parte proceeding, the record is insufficient to show that
AliExpress intended to copy Applicant’s trade dress for the purpose of confusing
consumers and passing off its own products as those of Applicant—the kind of copying
that may evidence distinctiveness. In re Koninklijke Philips Elecs. N.V., 112 USPQ2d
1177, 1187 (TTAB 2014). Even if AliExpress intentionally copied Applicant’s applied-
Serial No. 86297488
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for trade dress and the mark ODD SOX, the evidence is insufficient to establish that
the applied-for trade dress alone serves to identify the source of the goods. Nor is
there any evidence that Applicant has attempted to stop any such alleged misuse, or
to enforce its claimed trademark rights against these or any other third parties. Id.
As to the probative value of this evidence to support the position that the trade
dress is generic or not inherently distinctive, the Examining Attorney “concede[d]
that … its probative value … is unclear.” 16 TTABVUE 17. The Board also finds this
evidence sufficiently questionable as an example of third-party use. In short, we do
not consider this example probative in determining whether or not Applicant’s trade
dress is distinctive.
Turning to the eBay India screen print shown below,9 Applicant argues that it
cannot serve to show U.S. consumer perception because it is from a foreign website,
but that it does serve as an example that “demonstrates the fact that Applicant’s
mark is unique, unusual, and functions as a trademark as to the source of Applicant’s
Goods.” 14 TTABVUE 18.

9 October 17, 2016 Office Action at 2 (geb.ebay.in).
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Applicant provided its own screen print of this web page to further support that it
is from eBay India, as shown below:10

Applicant argues that although English-language material obtained from foreign
websites has been accepted as competent evidence in trademark examination when

10 April 13, 2017 Response at 11 (geb.ebay.in).
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it is likely that U.S. consumers have been exposed to the website, in this case it is not
probative. Specifically, Applicant contends:
While the foreign website in this case is in English, the
website is located at the “.in” TLD, [sic] are related to
consumer goods readily available in the United States and
from websites located at “.com” TLDs, and the cited
reference was a fleeting auction available for a very limited
time period. Furthermore, Applicant’s Mark does not
include a word element that would be searched by
consumers. The Examining Attorney’s search string of
“packaging socks side by side” is not a common search
string that would be used by consumers to find socks,
unless they were familiar with Applicant’s Mark, because
it is related to the packaging rather than any feature of the
socks themselves. Due to these factors, it is highly unlikely
a consumer in the United States would have been exposed
to this foreign reference.
14 TTABVUE 19-20.
The Examining Attorney responds that:
First, the examining attorney notes that the eBay India
evidence shows that the seller is located in Saint Paul,
Minnesota. Applicant’s 4/13/2017 Response, pg. 11. This
argues against the TLD being a factor in whether or not a
US consumer will go to a website and is direct evidence
showing that US residents do go to the precise foreign
website.
Second, the relevancy of the goods being available in the
United States is not clear. There is no evidence of record
that suggests that consumers enter searches that restrict
the results to only US sellers and gTLDs. A general search
will search the entire World Wide Web, including websites
in other countries. See In re King Koil Licensing Co., 79
USPQ2d (BNA) 1048, 1050 (Trademark Trial & App. Bd.
March 2, 2006) (stating that “[w]e therefore disagree with
applicant’s essential contention that a general consumer in
the United States would not turn to foreign web sites when
researching products they may be planning to purchase.
Such consumers may visit foreign web sites for
informational purposes, even if they are more likely to
Serial No. 86297488
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focus on internet retailers that can easily ship items or
make items available for pick up in a store in a location
convenient to the purchaser.”)
Third, it is true that consumers would not search
“packaging socks side by side” when looking to purchase
socks. However, a search of “girls socks” would likely result
in finding the eBay India evidence because the wording is
used on the webpage to identify the goods.
16 TTABVUE 18-19.
It is settled that “[i]nformation originating on foreign websites or in foreign news
publications that are accessible to the United States public may be relevant to discern
United States consumer impression of a proposed mark.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007). The
probative value of foreign information sources is evaluated on a case-by-case basis.
Id. “Various factors may inform the probative value of a foreign website in any given
case, such as whether the website is in English (or has an optional English language
version), and whether the nature of the goods or services makes it more or less likely
that U.S. consumers will encounter foreign websites in the field in question.” In re
Well Living Lab Inc., 122 USPQ2d 1777, 1782 n.10 (TTAB 2017).
Here, the foreign website geb.ebay.in is in English, the item for sale is located in
Saint Paul, Minnesota, and it is the type of good that a U.S. consumer might seek
from this website. That the Examining Attorney’s search looked for a specific type of
packaging does not mean this website would not be returned in a search for “girl’s
socks” as explained by the Examining Attorney. While we have considered this
evidence, the result would be the same without it, given the other evidence and the
nature of Applicant’s trade dress.
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Failure to Function Refusal Under Sections 1, 2 and 45 – Whether
the Trade Dress is Generic Packaging
“[T]rade dress that cannot serve as an indicator of source is generic and
unprotectable.” Sunrise Jewelry, 50 USPQ2d at 1535 (“generic name” in Section 14(3)
of the Trademark Act, 15 U.S.C. § 1064(3), “must be read expansively to encompass
anything that has the potential but fails to serve as an indicator of source, such as
names, words, symbols, devices, or trade dress.”); see also Nora Beverages Inc. v.
Perrier Grp. of Am. Inc., 269 F.3d 114, 60 USPQ2d 1038, 1041 (2d Cir. 2001)
(affirming the district court’s finding that the water bottle manufactured and sold by
Nora was generic because “it was used, with minor variations, throughout the entire
market of similar products”); Mana Prods. v. Columbia Cosmetics Mfg., 65 F.3d 1063,
36 USPQ2d 1176, 1180 (2d Cir. 1995) (“[W]here it is the custom in a particular
industry to package products in a similar manner, a trade dress done in that style is
likely to be generic. In other words, when the possibilities of the ultimate trade dress
for a product are limited and the trade dress is therefore in commonplace use, it is
unlikely that consumers will view the trade dress as distinctive of the goods or
services of a particular seller.”); see also Paddington Corp. v. Attiki Imps. & Distribs.,
Inc., 996 F.2d 577, 27 USPQ2d 1189, 1193 (2d Cir. 1993).
Generic product packaging is incapable of source identification and cannot be
registered. Trademark Act Sections 1, 2 and 45. Cf. Stuart Spector Designs, 94
USPQ2d at 1554 (generic product design unregistrable). Our precedent dictates that
a product design may be deemed generic where it is, “at a minimum, so common in
the industry that it cannot be said to identify a particular source.” Id. at 1555; see
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also Sunrise Jewelry, 50 USPQ2d at 1535-36 (noting that trade dress can be
considered generic if it “consists of the shape of a product that conforms to a well-
established industry custom”) (citation omitted). We hold that this standard applies
equally to product packaging. This standard recognizes the beginning of the
Abercrombie scale (Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189
USPQ 759, 764 (2d Cir. 1976) generic, descriptive, suggestive, arbitrary, or fanciful)
based on a similar analysis found in the first test for determining the inherent
distinctiveness of trade dress in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196
USPQ at 291.11 See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1684-85 (Fed. Cir. 2010).
We also believe it is appropriate when determining if trade dress is generic to
apply a similar two-step inquiry that we apply to word marks, where we first
determine the genus of goods or services at issue, and second, determine whether the
consuming public primarily regards the matter sought to be registered as a category
or type of trade dress for the genus of goods or services. See Sunrise Jewelry, 50
USPQ2d at 1536; H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986). In Sunrise Jewelry, the Federal Circuit
denominated a genus. See Sunrise Jewelry, 50 USPQ2d at 1536 (assessing the
genericness of the design at issue as to “the genus of clocks, watches, and jewelry
made of precious metal”). And, the Court assessed whether consumers would

11 The first Seabrook test is: whether the mark was a “common” basic shape or design. The
remaining tests are discussed infra. Seabrook Foods v. Bar-Well Foods, 196 USPQ at 291.
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associate the trade dress primarily with the genus (i.e., the identified goods) or with
the producer. Id. (asking whether consumers would associate the “metallic nautical
rope design” at issue with the product category “rather than with Fred’s specific line
of products”).
With regard to the first inquiry, there is no dispute regarding the relevant
category of goods, which is defined by the identification, socks. Cf. H. Marvin Ginn,
28 USPQ at 530. As for the second inquiry, the relevant consumers are those who
purchase or wear socks. We consider the evidence of record regarding the primary
significance of the applied-for trade dress to those consumers.
“Cases have recognized that competitor use is evidence of genericness,” Stuart
Spector Designs, 94 USPQ2d at 1555 (citing BellSouth Corp. v. DataNational Corp.,
60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995)), and the Examining Attorney
points to the evidence of record with 32 examples of socks secured with rectangular
packaging including 11 examples of side-by-side placement and concludes that “[t]he
common and wide-spread use of rectangular packaging for one or more pairs of socks,
often side-by-side, shows that the applied-for mark features ordinary packaging and
product arrangement that is not inherently distinctive and is wholly incapable of
acquiring distinctiveness.” 16 TTABVUE 8. “The evidence of record shows common
third-party use of rectangular packaging for sock displays. While the size of the
rectangle may vary, and the precise placement of the socks may vary, the widespread
use of the overall configuration for displaying a pair of socks renders the applied-for
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mark generic. As such, consumers would not view the packaging alone as an indicator
of the source of the goods.” Id.
Applicant “does not disagree that multiple pairs of socks are commonly packaged
side by side,” but argues that “packaging a single pair of socks side by side is very
unusual and is not expected by the consumers and therefore makes an extremely
distinct commercial impression on the consumer. Display space at retailers is at an
ultimate premium and for that reason single pairs of socks are packaged front to back,
in direct contrast to Applicant’s elongated rectangular design.” 10 TTABVUE 11-12.
Applicant’s argument that the display of a single pair of socks side-by-side is
unique and unusual because it takes up more display space and forms a different
overall shape is not supported by any record evidence. Moreover, as conceded by
Applicant, and as the record shows, it is common for multiple pairs of socks to be
displayed side-by-side taking up retail space. The only possible “unusual” aspect is
that Applicant displays only one pair of socks rather than multiple pairs.
Looking at, for example, the Mickey/Minnie Mouse and Betty Boop images shown
above, the socks are hanging from an elongated rectangle and are presented side-by-
side where the toe is flattened and faces forward and the heel is flattened and faces
backward. They appear to be more than one pair of socks but the overall commercial
impression is the same as for a display of a single pair of socks. Cf. Stuart Spector
Designs, 94 USPQ2d at 1567-68 (“It is simply not reasonable to conclude that the
average consumer of guitars, which would include non-musical parents buying a
guitar for their child, could distinguish one guitar from another based solely on a
Serial No. 86297488
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millimeter of difference in the body shape.”). While the socks in these examples are
shorter than the long socks displayed in Applicant’s drawing, that fact is not a
noteworthy point of difference. Id. Moreover, the applied-for mark does not claim a
specific size of sock as the socks are depicted in dotted lines. From this record, it is
clear that rectangular packaging enabling the hanging of socks from front-to-back
and side-by-side is so common in the industry that such packaging is not capable of
indicating source, and rectangular packaging enabling the hanging of a single pair
of socks side-by-side is at most a minor variation of the common form of packaging.
Nora Beverages, 60 USPQ2d at 1041.
Moreover, where the possibilities for the trade dress are limited, this provides an
additional basis for finding that it is unlikely that consumers will view the trade dress
as indicating source. Mana Prods., 36 USPQ2d at 1180. The record reveals that the
placement of socks side-by-side and front-to-back may be useful to sellers and
appealing to consumers. For example, a seller may want the consumer to see a feature
of the product, namely, that the socks when placed together form a single image
or may want to display the two styles available in the package
. Thus, the possibilities for variations on trade dress for the display of socks are
limited and Applicant’s claimed trade dress would limit further competitor’s ability
to display their single image socks side by side.
Viewing the record as a whole, the evidence shows that consumers of socks would
primarily regard the applied-for product packaging as a common type of packaging
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for socks, rather than as a source indicator for Applicant’s socks in particular. In view
of the above, we find Applicant’s packaging trade dress to be generic.
Whether the Packaging is Inherently Distinctive
For completeness, we consider the alternative ground for refusal that even if the
trade dress is not generic, it is still not inherently distinctive. While product design
trade dress is never inherently distinctive, packaging trade dress may be. Wal-Mart
Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068, 1069-70 (2000).
Applicant’s applied-for trade dress has been categorized and described as packaging.
“[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a
particular source.’” Wal-Mart Stores, 54 USPQ2d at 1068 (quoting Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992)). It “should be
displayed with such prominence as will enable easy recognition” and “the average
consumer will regard it as an unmistakable, certain, and primary means of
identification pointing distinctly to the commercial origins of such product.” In re
Swift & Co., 223 F.2d 950, 106 USPQ 286, 289 (CCPA 1955). “[U]ltimately ‘the focus
of the [inherent distinctiveness] inquiry is whether or not the trade dress is of such a
design that a buyer will immediately rely on it to differentiate the product from those
of competing manufacturers; if so, it is inherently distinctive.’” Chippendales, 96
USPQ2d at 1685 (quoting Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d
1321, 1331 (Fed. Cir. 1994)). As noted above, to determine whether or not packaging
trade dress is inherently distinctive, we apply the four-part test set forth in Seabrook:
1) whether it is a “common” basic shape or design;
2) whether it is unique or unusual in the particular field;
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3) whether it is a mere refinement of a commonly-adopted and well-known form
of ornamentation for a particular class of goods viewed by the public as a dress
or ornamentation for the goods; or
4) Whether it is capable of creating a commercial impression distinct from the
accompanying words.
Seabrook, 196 USPQ at 291. If the Examining Attorney shows that the involved
packaging is a common basic shape or design, is not unique or unusual in a particular
field, or is a mere refinement of common ornamentation it is not inherently
distinctive. Chippendales, 96 USPQ2d at 1684. Our findings above concerning the
evidence establish that under the first Seabrook test the applied for trade dress is a
common basic shape or design for sock packaging and, thus, the trade dress is not
inherently distinctive. For completeness, however, we address Applicant’s arguments
concerning the four Seabrook tests.
Applicant argues that under the first and second tests in Seabrook its:
[m]ark is not a common basic shape or design and is unique
and unusual in the field in which it is used. The common
packaging for a single pair of socks is that of a front to back
stacking of the pair of socks. Applicant’s Mark is unique
and unusual within the sock industry in that the Mark
incorporates an elongated packaging which positions the
socks side by side. The unique and unusual nature of
Applicant’s Mark creates a commercial impression on
consumers that they come from a single source,
particularly, Applicant. Applicant’s Mark is a new and
unique product packaging that was not used in the
industry before Applicant and is currently used by
competitors attempting to trade on Applicant’s goodwill.
14 TTABVUE 20 (emphasis in original).
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As to the third and fourth tests, Applicant contends that its trade dress is not a
mere refinement because Applicant “uses an unusual width of display space for a
single pair of socks. A single pair of socks side by side is very unusual and is not
expected by the consumers and therefore makes an extremely distinct commercial
impression on the consumer.” 14 TTABVUE 21 (emphasis in original). As noted
above, Applicant’s applied-for trade dress consists of an elongated rectangle from
which hangs a single pair of socks with the toes flattened facing forward hanging
side-by-side.
As discussed above, the record includes multiple examples of rectangular
packaging of varying lengths with toes flattened facing forward and heels flattened
facing backward. The evidence establishes that an elongated rectangle from which to
hang a pair or pairs of socks is a common shape in the socks industry, and Applicant’s
particular packaging is not unique or unusual in the field of socks. Although there
appears to be only one example of such packaging that display only a single pair of
socks, we find that such a display is, at most, a mere refinement of the attributes of
the existing packaging in the record. See In re Chevron Intellectual Prop. Grp. LLC,
96 USPQ2d 2026, 2029 (TTAB 2010) (pole spanner sign for service stations not
inherently distinctive because it is common for service stations to use pole spanners
in various shapes and because the spanners are in common geometric shapes are less
likely to stand out as distinctive elements of the overall pump ornamentation). Thus,
as the Examining Attorney reasons, “[a]lthough the size and orientation of the
rectangle may vary, and the precise placement of the socks may vary, [because of] the
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widespread use of the overall configuration for holding a pair of socks” the applied-
for mark is not inherently distinctive. 16 TTABVUE 11. The side-by-side display of a
single pair of socks rather than multiple pairs would not be a striking or source-
identifying differentiating feature of sock packaging to a potential consumer. See
Mana Prods., 36 USPQ2d at 1180 (“In the compact industry, nothing about a
rectangular or square shape or black color is ‘striking, unusual, or otherwise likely to
differentiate the products of a particular producer.’”) (quoting RESTATEMENT (THIRD)
OF UNFAIR COMPETITION § 13 cmt. d (1995)). These multiple examples provide a
“reasonable predicate” for the Examining Attorney’s position that the subject matter
is not inherently distinctive. Pacer Tech., 67 USPQ2d at 1631.
Applicant asserts that the side-by-side packaging was not used in the industry
before Applicant used it. 4 TTABVUE 9. In the context of ornamental trade dress, the
Board has held that even if an applicant is the only user, “this fact alone does not
imbue the design with source-indicating significance, where the applicant’s design
merely repeats an ordinary shape in an unremarkable pattern and places it on the
goods in an unremarkable way.” Fantasia Distrib., 120 USPQ2d at 1141. In the
context of product configuration, the Board has held that “while applicant’s applied
for design may be unique in the sense that it is a ‘one and only,’ the record
demonstrates that said design is not unique in the sense it has an ‘original,
distinctive, and peculiar appearance.’ In other words, the record demonstrates that
applicant’s applied for design is not inherently distinctive or unique in the sense that
the term ‘distinct’ is defined as ‘clearly perceived or marked off’ or ‘unmistakable,’ or
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in the sense that the term ‘unique’ is defined as ‘highly unusual, extraordinary.’” In
re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992) (internal citations
omitted). See also In re J. Kinderman & Sons Inc., 46 USPQ2d 1253, 1255 (TTAB
1998) (“[W]hile the designs applicant seeks to register may be unique in the sense
that we have no evidence that anyone else is using designs which are identical to
them, they are nonetheless not inherently distinctive. … [A]pplicant’s designs, which
consist of stars and the colors red, green and gold, and indeed resemble wrapped
Christmas presents, are a mere refinement of a form of ornamentation for Christmas
merchandise. As such, purchasers and prospective customers for applicant’s goods
would be unlikely to regard these designs as identifying and distinguishing
applicant’s Christmas tree lights and indicating their source.”).
Similarly, here, even if we were to assume, contrary to the evidence in the record,
that no competitor uses packaging identical to Applicant’s, this does not render
Applicant’s packaging inherently distinctive where it consists of a commonly used
rectangular holder with socks hanging down. The evidence shows that packaging
displaying pairs of socks side-by-side is a common basic shape or design and is not
unique or unusual in this field, and the attribute of displaying only a single pair of
socks would not be “perceived or marked off” as distinct from the other similar
packaging. E S Robbins, 30 USPQ2d at 1542. This is not a circumstance where the
packaging’s “intrinsic nature serves to identify a particular source of the product,”
Two Pesos v. Taco Cabana, 23 USPQ2d at 1083.
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Finally, as shown by the specimen of use, the rectangular holder includes the
wording ODD SOX and there is no evidence to show that the packaging creates a
commercial impression separate and apart from the wording.12 Seabrook, 196 USPQ
at 291. The packaging is thus nondistinctive under each of the Seabrook tests.
Decision: The refusals to register Applicant’s mark are affirmed on the grounds
that it is generic trade dress packaging and, in the alternative, that it is not
inherently distinctive.

12 June 2, 2014 Application.